Have your cake and trade marks too!
It is safe to say that the UK was fixated on the recent Colin v Cuthbert cake war that hit national headlines in April. qLegal Students Sofoklis and Victoria explore the lessons of trade mark surrounding this chocolate cake war, but more importantly how trade marks can be useful for small businesses when it comes to branding.
If you haven’t heard about the Colin vs. Cuthbert battle by now, then you might have been living under a rock, or you just might not have social media . The battle of Colin v Cuthbert grabbed the nation’s attention back in April and shows no signs of subsiding.
In April 2021, Marks &Spencer (M&S) commenced legal action against Aldi, stating that its Cuthbert the Caterpillar cake infringed upon the trade marks of Colin, its M&S rival and the first caterpillar cake brought to market. M&S has a trade mark registered for the phrase “Colin the Caterpillar”, and further trade marks to cover Colin’s packaging and even his own basic shape.
The central point of this case relies on the assertion that similarities between Colin and Cuthbert caused confusion amongst customers, which led to customers buying a Cuthbert, either in the belief they were getting a Colin or that they were buying a product of comparable quality.
No timeline has been set out for reaching a verdict in this case, and what that decision will be when the time comes is equally unclear. In the short term, the controversy appears to have done wonders for Cuthbert’s popularity. Aldi has done a great job at using viral marketing with its #freecuthbert campaign, increasing their brand’s engagement rate on Twitter by over 2000%. Aldi’s tweets regarding this matter have been going viral in minutes, with one tweet accumulating over 70,000 likes and 10,000 retweets.
Cutherbert’s return to stores on 17 May was marked with a charity fundraising initiative and went down a storm among consumers. M&S, on the other hand, has received a public backlash for its legal action, and if social media is anything to go by, Cuthbert is the clear favourite. In the UK, we love the underdog or under-butterfly in this case. Commentary on social media is divided, with many criticising M&S for using its funds to bring such an action when there are greater and more troubling issues that need dealing with.[1]
You may be wondering what a caterpillar cake war has to do with your business. However, there are important lessons to be learned from this case that can apply to small businesses, particularly around starting and protecting your brand.
There is an assumption that intellectual property rights (IPRs) are only valuable to larger businesses. However, IPRs are just as important to smaller and medium-sized enterprises. A recent study showed that only 9% of European and UK SMEs rely on IPRs, and the businesses that do have 68% more revenue per employee than the firms that do not.[2]
Trade marks are one form of IP protection, and as they are the main issue in this caterpillar war, we will focus on their importance in this article. It is clear that most small business owners do not fully realise the potential of IPRs or the necessity of using them to their advantage at the early stages of their business.
Trade marks are a point of reference for customers. They can be business names, logos and even colours, all of which identify your product or your service. Looking at the caterpillar cake, the packaging and shape of the cake itself has become distinctive, if not iconic. Like all businesses, you need to build a brand which is easily recognisable and which customers can easily remember. Once you have developed your brand, you should use trade marks to protect it.
You may not have considered trade mark registration when starting your business. It is important to remember that although this would be an added expense, it is worth investing in.
When a trade mark is registered, the business has an automatic right to prevent others from using a confusingly similar sign, logo, company name and even cake packaging. When you look at branding as a whole, this is an important tool to have as it avoids the misuse of your mark. Another advantage of having a registered trade mark is that its protection lasts 10 years (and it may be renewed to provide longer protection).
In comparison to other IPRs, the relatively low cost of trade mark registration is worth this length of protection and would be a wise investment.
The UK Intellectual Property Office (IPO) evaluates every trade mark application to check if your mark is similar to an already registered mark and could therefore infringe on another business’ IPRs. If you do not want to hire IP lawyers to help you with your application, the IPO now even offers a Right Start service, to overview your application before it is sent for the final examination.
It is important to see registered trade marks as an investment in the future of the company. You should reflect on the duration of a trade mark. 10 years offers many opportunities for the business to grow and expand its goods and services. So, you should think early on about the areas where you want the business to develop, so you can register the trade mark for the appropriate sector of goods and services. You do not want to make separate applications each time you expand your goods or services.
M&S reportedly have three separate trade marks on the Colin the Caterpillar cake and have expanded the product line to include caterpillars of different genders and themes. On top of that, as you expand the business and involve different partners, you could also commercialise the company’s IP by licensing your trade mark.
The moral of the caterpillar cake story: if you want to protect your brand, you should take a zero-tolerance approach when you find another business infringing on your mark. If you do not act, you could lose the distinctiveness of the mark, and the value of the IP altogether. As many wondered when the story first broke out, why did M&S wait so long to bring a claim against a brand for trade mark infringement? Their delay could potentially hurt their case for infringement.
qLegal has an advisory programme where start-ups and entrepreneurs can seek advice on trade marks for their companies. We also offer toolkits on registering trade marks on our website.
Do not wait until it is too late: register your trade marks as soon as you can to best protect your business.
This article was written by Sofoklis Peratikos and Victoria Segovia who are participating in qLegal as part of their Law Masters studies at Queen Mary, University of London.
qLegal provides pro bono legal advice to start-ups and entrepreneurs on intellectual property, data protection, corporate and commercial law. See the qLegal website for more details and to book your appointment now. Follow us on Twitter and LinkedIn for regular updates on issues relevant to your business.
[1] https://thestudentlawyer.com/2021/05/07/ms-v-aldi-the-battle-of-the-caterpillar-cake/
[2] EUIPO ‘Intellectual property rights and firm performance in the European Union’ (2021) available at https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/documents/reports/IPContributionStudy/IPR_firm_performance_in_EU/2021_IP_Rights_and_firm_performance_in_the_EU_en.pdf